Intellectual Property, Technology Transfer, and Corporate Sponsored Research

Stephen Roberts Director, Technology Commercialization and Research Finance Research and Sponsored Programs

February 12, 2020 Bowman Room 206

1 2 2/13/2020 Happy Birthday, Mr. President Office of Technology Commercialization

The Office of Technology Commercialization assists faculty and staff in protecting, marketing, and licensing university inventions with commercial potential.

Stephen Roberts, MBA Director, Technology Commercialization and Research Finance 207Y Schwartz Center 330-672-6323 [email protected]

3 3 Office of Technology Commercialization

• Assist with Intellectual Property (IP) protection • Market Assessment • Licensing • Commercialization • Non-disclosure agreements (NDA) • Material transfer agreements (MTA) • Support KSU Patent Review Board • Assess for commercialization potential • License the technology • Create start-up company For more information: • Support commercial viability research http://www.kent.edu/research/commercialize-your-technology

4 4 Protecting your Intellectual Property

5 Basis for Patent Protection in the U.S.

US Constitution, Article 1, Section 8

“Congress shall have the power . . . to promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.”

6 6 Patent Act (Title 35 US Code)

Established the US Patent & Trademark Office To obtain protection under U.S. law, an applicant must submit a patent application to the USPTO, where it will be reviewed by an examiner to determine if the invention is patentable.

7 7 Patent Protection: What It Is / Is NOT

What it is • A limited period, government granted, “negative right” • Legal monopoly, for a limited duration, in exchange for disclosure to the public

What it is NOT • A grant of any right to make, use or sell an invention

8 8 Three Types of US Patents

Utility Patent • Process Steps for making a new chemical or a new business method • Machine Man-made apparatus with moving parts (engine, camera) • Article of Manufacture Man-made apparatus without moving parts (carpet) • Composition of Matter Chemical compositions, mixtures of substances (adhesives)

Design Patent Plant Patent Ornamental appearance of an Distinct and new variety of article of manufacture asexually propagated plant

9 9 What Can Be Patented? Invention must be • Novel: not previously known or used by others • Useful: have a known use or produce a concrete and tangible result • Non-obvious: not obvious to a person having ordinary skill in the art

Invention can not be • Anything not useful and operative • Laws of nature, physical phenomena, abstract ideas • The idea of a process, machine or manufacture

10 10 Research Publications & Patents

“NOVELTY; PRIOR ART.- A person shall be entitled to a patent unless the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention . . .”

35 U.S.C. 102(a)(a) (emphasis added) Exception in the US: Disclosures made by the inventor or a joint inventor 1-year or less before the invention is filed for protection.

WARNING: Many international jurisdictions, including Europe, Japan, and China, to not recognize the grace period- PUBLICATION = PRIOR ART

11 11 KSU Patent Policy (Policy 10-06)

The purposes of the KSU patent policy: • To promote the progress of the arts and sciences through research and scholarship and the professional development of the university's faculty, students, and staff; • To make inventions resulting from the efforts of university faculty, students, and staff available to business and industry, as well as the general public after applying section 3345.14 of the Revised Code; • To obtain revenue for the university for use in furthering its educational and research goals; • To provide appropriate compensation in accordance with the university policy on distribution of license and royalty income, for university faculty, students, and staff who invent.

12 12 IP Ownership and Royalty Distribution Policy

• As a state-chartered university, Kent State University owns any IP developed in our labs and offices. University pays all patent, marketing, licensing costs.

Licensing Income Inventor RASP Inventor’s Academic KSU < $100,000• Unit General Fund Gross up to $100k 40% 30% 15% 15%

Above $100,000, KSU recovers patenting and marketing expenses. Net income split according to formula above.

13 Patent Process

1. Submit Invention Disclosure Form (IDF) http://www.kent.edu/research/commercialize-your-technology 2. File provisional application with USPTO (Starts one year priority period to continue your research). 3. Publication or presentation at conference 4. Evaluation by KSU Patent Review Board 5. Market Assessment 6. File application under Patent Cooperation Treaty (PCT) (additional 18 months of protection). 7. Licensing 8. File non-provisional application with USPTO for utility patent

14 Technology Transfer

15 Office of Technology Commercialization

Kent Displays was founded in 1993 by Professor Bill Doane of the Liquid Crystal Institute at Kent State University and William Manning of Manning and Napier, Rochester New York.

16 16 • Cleveland State University & Kent State University collaboration to help move faculty technology & innovation from research labs/facilities into commercial markets. • Half funding from Ohio Third Frontier Fund, half from CSU and KSU.

• Grants from $10,000 to $100,000; used to validate university owned technology, build prototypes, and analyze commercial market potential. • Two step application process-

• 1. Two page Letter of Intent, reviewed by Screening Committee

• 2. If approved, we send a 6 page application for you to prepare, reviewed by 9 member Selection Committee .

17 • What is the problem or need?

• Who has the problem or need? Value Proposition • How is the problem/need currently solved/met?

• How is your solution unique?

18 Our product\service is______(noun or short phrase)

for ______who are (potential application\users) Value Proposition dissatisfied with ______. (current market alternative that addresses same pain point)

It provides ______. (potential benefits)

19 Kent State Support

• Karen MacDonald, Business and Entrepreneurship Outreach Librarian

Databases, library resources for industry and market research. Excellent LibGuide-https://libguides.library.kent.edu/prf.php?account_id=51940 Small Business Development Center- Tom Southards Great resource for small business. Help create LLC, Growth Wheel, find manufacturers to help build prototypes. • LaunchNet – Julie Messing, Zach Mikrut, Tabitha Messmore Support start-ups of students, faculty/staff, alumni. Trained in Lean Launch & Business Model Canvas. Valued partnership builder across campus.

20 North East Ohio Support Programs

• JumpStart- Entrepreneurial Support Program for NE Ohio. Offices in Cleveland, Akron, Canton. Venture Validation program- assess commercial potential for early-stage tech. • BioEnterprise- bioscience support. Based in Cleveland. Access to Venture Capital, Private Equity, grant funding 350+ start-up companies, over $2 Billion raised • MAGNET- Manufacturing Advocacy and Growth Network Cleveland and Akron

21 Corporate Sponsored Research

22 What Are Corporate Partnerships?

• Comprehensive strategic relationships between industry & higher ed that span multiple interests across academic disciplines: • Research collaborations with faculty • Engaging with talented faculty • Recruiting talented students for employment • Developing & licensing university technologies • Training & educating company employees

23 Broaden Faculty Engagement Broaden KSU faculty participation and relationship-building opportunities with corporations. • Help early-career and mid-career faculty collaborate more effectively with corporations. • Strengthen linkages between corporations and KSU’s strongest multi-disciplinary research teams. • Foster improved faculty & student tech transfer, commercialization, and start-up efforts. 24 • Flashfast Licensing - The Ohio IP Promise

• Flashfast Licensing is designed to establish a clear, easy to understand process for licensing intellectual property developed at Kent State University from industry sponsored research.

• Sponsored Research Licensing Options:

• Option 1: Non-Exclusive Royalty Free License

• Option 2: Paid-Up Exclusive License. Sponsor receives an exclusive license for any IP developed from the SRA

25 Summary

We’re here to support your research in IP with commercial potential.

…and to do that by working with you and others in Northeast Ohio to provide needed services and increase your odds of success. Now, let’s talk about your ideas and questions.

26 Thank You. www.kent.edu/research

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